News Analysis: Beer’s got the trademark blues

BrewDog was founded in 2007 in Scotland by James Watt and Martin Dickie. Their mission “was to make other people as passionate about great craft beer as we are”.

The co-founders said in a statement in October that they had received a notice from the lawyers of Elvis Presley’s estate stating that the brewery was not allowed to call its blood orange and grapefruit-infused IPA ‘Elvis Juice’.

“Here at BrewDog, we don’t take too kindly to petty pen-pushers attempting to make a fast buck by discrediting our good name under the guise of copyright infringement,” they said, although the claim seems to be for trademark infringement.

On October 4, the two co-founders changed their names by deed poll to Elvis Watt and Elvis Dickie.

They added: “By the Elvis Presley estate legal team’s logic, I am pretty sure we could even lodge a counter-complaint aimed at Presley himself for all the records he put out without Elvis Watt and Elvis Dickie’s permission!”

BrewDog registered its trademark for the term ‘BrewDog’ at the UK Intellectual Property Office (IPO) in 2008.

The brewery applied for the term ‘Elvis Juice’ in November 2015 and ‘BrewDog Elvis Juice’ in March 2016 at the IPO.

Both the trademark applications have been opposed by ABG EPE IP, the estate of Elvis Presley, which owns a number of trademarks related to Elvis.

WIPR asked IP lawyers for their opinion on the estate’s legal complaint.

Guy Heath, partner at law firm Nabarro, says: “BrewDog says the complaint claimed copyright infringement, but presumably not. A European Union trademark claim can sometimes be defended on an own-name basis, so maybe that’s what co-founders Elvis Watt and Elvis Dickie have in mind—plus some heaven-sent publicity.”

He adds that responses to threats of infringement vary widely and include abject apology, threats of immediate reprisal, claims never to have received the letter, and immediate publication of one’s letter in the local newspaper or online arguing that it’s a case of trademark bullying.

“It is not a usual ploy for anyone to change their personal name,” he says.

Heath adds: “There must be a huge temptation to milk the situation for publicity, but in general this will be a hard thing for most people to pull off. If it simply generates bad feeling then it’s not a good strategy.”

Kate Swaine, partner at Gowling WLG, advises rights owners to “always consult an IP lawyer”.

“If the threat relates to trademarks and is without basis then the threatened party may have a claim for a groundless threat.

“The Elvis estate has monopoly rights in registered trademarks, so why should it not seek to enforce them?”

“If there is merit in the allegations or a strong basis for a defence then it is better to try and get them resolved at an early stage before the dispute escalates.”

Swaine adds: “If Elvis Presley Enterprises has enforceable rights which predate the use being made of ‘Elvis’ by BrewDog, then the owners’ changing their names to Elvis is legally pretty irrelevant, although it makes for an entertaining story.”

Chris McLeod, partner at Elkington & Fife and immediate past-president of the Institute of Trade Mark Attorneys, says: “The estate of Elvis Presley could certainly initiate passing off trademark infringement proceedings if it has sufficient earlier rights through registration or use, and it does appear to have earlier rights in the word ‘Elvis’ covering beer.

“It is also a relatively easy argument that the BrewDog beer is likely to be seen as licensed or otherwise authorised by the estate.”

McLeod agrees with Swaine and advises recipients of legal threats to refer them “immediately to their trademark attorneys or other IP advisors”.

“Social media and a tendency to categorise disputes of this nature as ‘David v Goliath’ mean that this reaction is not that unusual. However, trying the matter in the court of public opinion is unlikely to resolve it.

“The Elvis estate has monopoly rights in registered trademarks, so why should it not seek to enforce them?” he says.

“The BrewDog response to the dispute is admittedly amusing, but if BrewDog continue to respond in this way, the dispute is likely to drag on and divert BrewDog from what they do best: brewing beer.”

What’s in a name

This dispute brings to mind a trademark dispute between cosmetics company Lush and online retailer Amazon.

In 2013, Lush sued Amazon for trademark infringement in the UK. The cosmetics company sued Amazon for using the ‘Lush’ mark on its website search function, despite not selling any of Lush’s products.

Amazon had purchased the word ‘Lush’ via Google AdWords in order to direct customers searching for Lush products to Amazon’s website. Lush claimed that through these AdWords, a person searching for Lush products would be redirected to Amazon’s website,
where they would be shown other products.

The English High Court ruled in 2014 that Amazon had infringed Lush’s mark, and the case has since been settled privately.

After the ruling, it emerged that Lush co-founders Mark Constantine and Liz Weir had trademarked the term ‘Christopher North’ at the IPO. The mark had been granted in July 2012 and is due for renewal in April 2022.

North was formerly CEO of Amazon UK; he left the company in May this year.

The ‘Christopher North’ mark covered products including lotions, creams, shampoos, and pharmaceutical preparation products.

UK newspaper The Guardian added that Constantine had said Amazon’s lawyers had reported that North was “hopping mad” about the mark.

Lush and BrewDog are arguably two examples of PR stunts, but their bark is worse than their bite.